Between the slew of celebrity brands hit with trademark infringement suits and the recent “State of Skin” court petition between 3-year-old brand Sachi Skin and newcomer Current State in February, there’s been an unprecedented uptick in trademark disputes within the beauty industry.
The spotlight on trademark law within the beauty industry seems to be twofold: Trademark disputes themselves are nothing new, but there’s been a natural uptick as the number of beauty brands launching continues to increase. Meanwhile, newfound public interest appears to stem directly from the fame of the many celebrity founders entrenched in these suits.
“A trademark is an intangible business asset,” said Diana Palchik, trademark and business attorney and principal of Beauty Mark Trademark Services. “Often, it’s a beauty company’s most valuable asset. In the case of high-profile marks, such as celebrity brands, the trademark’s value can be in the millions of dollars. That’s one reason these disputes arise so frequently in this sector.”
In June 2022, Kim Kardashian’s SKKN by Kim and Hailey Bieber’s Rhode — two highly anticipated celebrity skin-care brands — were hit with trademark infringement lawsuits. Both cases relied on the concept of “reverse infringement,” according to Heather A. Antoine, JD, a partner at Stubbs, Alderton & Markiles, LLP.
“In most cases, the senior trademark user, having been around longer, is more well-known,” said Antoine. “An argument often made is that the junior user is trying to capitalize on the senior user’s brand success.”
In the case of “reverse infringement,” the opposite is true: The junior trademark user is more well-known and could therefore take away from the notoriety and success of the senior user.
“Celebrities can launch a brand and easily overtake public recognition overnight, even though they are the junior user. This potentially causes reverse confusion,” said Antoine.
It’s also worth noting the appeal of a David and Goliath-like story in the press, which may partially explain the newfound attention on beauty industry trademark disputes, she said.
But these disputes aren’t exclusive to the realm of celebrity-owned beauty brands. In early 2023, Seemark Brands’ trademark application for “Current State of Skin” was refused registration based on the likelihood of confusion with Sachi Skin’s trademark registrations for “States of Skin” and “New States of Skin.” Despite the refusal — and Sachi Skin’s public allegations that Current State’s brand name infringes on its trademarks — Seemark went forward with its Current State launch. It also filed a petition against the refusal, as well as an additional petition with the trademark trial and appeal board to cancel Sachi Skin’s trademark registrations. The latter was based on the claim that the phrase “States of Skin” is generic and is therefore not entitled to trademark protection. Current State did not return a request for comment.
A statement from Farah Bashir, founder of Sachi Skin, wrote, in part, “Our States of Skin philosophy is integral to the Sachi Skin brand because we believe that skin is in constant flux and evolution, as represented by our roots in Ayurvedic Medicine. … Accordingly, Sachi Skin has taken steps to protect its trademarks, such as ‘States of Skin,’ by obtaining trademark registrations, and we are prepared to defend our trademark rights and the rights of our customers to rely on our brand and to select our products in the marketplace.”
“This is an interesting maneuver,” said Antoine. “I do not believe the likelihood of success is high. And it does not do anything to stop Sachi Skin from suing them for trademark infringement in federal court, which they are now entitled to do since Seemark has started selling products.”
In both the State of Skin and Rhode controversies, the brands chose to carry on, despite the suits and allegations filed against them. Most of these disputes are ultimately resolved with out-of-court settlements, though they certainly can go all the way through the court system. While the initial filings tend to garner substantial press coverage, stories tend to drop off down the road — and settlements tend to keep details undisclosed, having far less appeal to the average person anyway. According to Launchmetrics data, the lawsuit did generate significant interest for both brands when the news broke in July 2022. Rhode Fashion saw an increase in MIV of over 450%, to over $378,000. MIV is a proprietary Launchmetrics metric standing for media impact value. MIV tracks the impact of influencers, print media, celebrities, official third-party partners and a brand’s own media channels. Meanwhile, Rhode Beauty experienced $3 million in MIV the same month, a decline from the previous month of nearly $6 million when the brand launched.
But these disputes are no small deal for those involved.
“A beauty company’s name and product names are frequently its most valuable assets,” Palchik said. “Name recognition and reputation are tied to the trademark. The trademark constitutes the company’s identity. We often see that founders or key executives of a business have a strong emotional investment in the company’s trademark, as well. Rebrands are expensive and complicated.”
That’s not to say the situation is bleak. Current State has made subtle but important changes to its branding — most notably, changing its name from “Current State of Skin” to “Current State of Beauty.”
Palchik and Antoine both expressed a hope that the increased attention on beauty industry trademark disputes will lead founders to take more care when selecting brand names — both by simply thinking more outside the box and by working with trademark attorneys. Still, there will always be outliers. In the mid-aughts, the tech industry began its descent into similar and quirky name territory due in part to the Silicon Valley boom over the previous decade. There was a need to stake a claim on valuable internet territory in the form of URLs and, later, search engine optimization.
“Unfortunately, as the beauty space continues to be a crowded field, we will have to live with the business reality of oppositions, cancellations, cease and desist letters, and sometimes even lawsuits,” Palchik said. “At the same time, as this industry is a highly creative and dynamic one, there will also be a positive overall impact over time as industry participants develop more creative solutions or approaches to these recurring issues.”